Emerson Electric Co. v. frank arnold
Claim Number: FA2304002039185
Complainant is Emerson Electric Co. (“Complainant”), represented by John M. Groves of Emerson Electric Co., Missouri, USA. Respondent is frank arnold (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emesonelectric.com>, registered with Gandi SAS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on April 6, 2023; Forum received payment on April 6, 2023.
On April 11, 2023, Gandi SAS confirmed by e-mail to Forum that the <emesonelectric.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emesonelectric.com. Also on April 14, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it was established in 1890 in St. Louis, Missouri (USA) as Emerson Electric Manufacturing Co. by Civil War Union veteran John Wesley Emerson to manufacture electric motors using a patent owned by the Scottish-born brothers Charles and Alexander Meston. In 1892, Complainant became the first to sell electric fans in the United States. It quickly expanded its product line to include electric sewing machines, electric dental drills, and power tools. Today, Complainant is a diversified, global manufacturing and technology company. It offers a wide range of products and services in the industrial, commercial and consumer markets through its Process Management, Industrial Automation, Network Power, Climate Technologies, and Commercial & Residential Solutions businesses. Recognized widely for its engineering capabilities and management excellence, Complainant has approximately 85,000 employees and 160 manufacturing locations worldwide. Complainant has rights in the EMERSON mark through numerous trademark registrations around the world, including in the United States in 1916.
Complainant alleges that the disputed domain name is identical or confusingly similar to its EMERSON mark as it consists of a misspelling of the mark (the letter “r” is omitted), merely adding the generic/descriptive term “electric” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not permitted to use Complainant’s EMERSON mark and is not commonly known by the disputed domain name, Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a parked page with pay-per-click hyperlinks, some of which are for goods and services that compete with those offered by Complainant.
Furthermore, says Complainant, Respondent registered and uses the disputed domain name in bad faith by capitalizing on the confusing similarity of the domain name to divert traffic to a page with pay-per-click hyperlinks. Respondent is typosquatting. Respondent did not respond to Complainant’s cease-and-desist letters. Respondent had constructive and/or actual knowledge of Complainant’s rights in the EMERSON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademark rights for the mark EMERSON and uses it to market a variety of electric goods and services. The mark was registered in 1916.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2022.
The resolving website displays advertising links to products and services, some of which compete with those of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name consists of a misspelling of Complainant’s EMERSON mark (the letter “r” is omitted), with the mere addition of the generic/descriptive term “electric” and the “.com” generic top-level domain name (“gTLD”). Such changes are insufficient to overcome confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Liberty Mutual Insurance Company v. Texas Internet, FA1006001330686 (Forum August 3, 2010) (holding <libertymutul.com> domain name is confusingly similar to Complainant’s LIBERTY MUTUAL mark as the respondent simply omitted the letter “a”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Transamerica Corporation v. Zhichao Yang, FA2109001962452 (Forum Oct. 1, 2021) (finding confusing similarity when “Respondent’s at-issue domain names each contain Complainant’s TRANSAMERICA trademark along with either the prefix “com” or “my” and followed by the generic term “employee benefits,” or simply followed by a misspelled variant of the term “employee benefits.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its EMERSON mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information for the disputed domain name lists the registrant as “frank arnold”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website displays pay-per-click third-party advertising hyperlinks that compete with Complainant’s business. Previous Panels have found that where a respondent’s disputed domain name is used to host competing and/or pay-per-click hyperlinks there is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent engaged in typosquatting. The disputed domain name does contain a misspelling of Complainant’s mark, but it also contains a generic/descriptive term. Typosquatting generally involves a domain name that consists only of a misspelling of a mark, see 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), which is not the case here. Consequently, the Panel will not further discuss this allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website displays competing advertising links. Past panels have found that diverting consumers to a site with pay-per-click links is evidence of Policy ¶ 4(b)(iv) bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Guidehouse LLP v. Zhi Chao Yang, FA2209002013476 (Forum Oct. 31, 2022) (“[T]he resolving website displays advertising links to competing services. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum February 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Thus the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emesonelectric.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 11, 2023
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